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[Jayanthi]

I know that Patent Agents cannot work on infringement cases. Apart from that I would like to know what patents agents cannot do that Patent Attorneys do.

[klaviernista]

Too many things to spell out one by one.  But here is a start.

Agents cannot practice law, other than patent law within the limited confines of federal law and the USPTO rules.  Thus, among other things, a patent agent cannot:

Draft infringement or non-infringement opinions;
Draft assignments, non-disclosure agreements, licenses, or other IP related agreements; and.
Represent clients in court (BPAI excluded).

[Robert K S]

This means if you lose at the BPAI and you want to appeal to the CAFC, it's the end of the road for you as an agent, and you have to send your business elsewhere.

[Wiscagent]

... to appeal to the CAFC, it's the end of the road for you as an agent, and you have to send your business elsewhere.

Yes, an attorney would have to represent the applicant in court.  And if the agent has a good relationship with the client and the attorney, the agent (as the person most familiar with the application) can be a valuable member of the attorney's team.

[Sixes]

This means if you lose at the BPAI and you want to appeal to the CAFC, it's the end of the road for you as an agent, and you have to send your business elsewhere.

Does said attorney have to be registered with the USPTO to appeal a case to the CAFC, or is that irrelevant once the case is done in the BPAI? 

[Robert K S]

Does said attorney have to be registered with the USPTO to appeal a case to the CAFC, or is that irrelevant once the case is done in the BPAI?

I think it's irrelevant, but the attorney will need to be admitted to practice before the CAFC (just involves filling out a form as far as I can tell).

[dablueman]

I know that Patent Agents cannot work on infringement cases. Apart from that I would like to know what patents agents cannot do that Patent Attorneys do.

It's easier to define what agents can do. Agents can only draft an application and communicate with the PTO. Absolutely everything else has to be done by attorneys.

[Robert K S]

It's easier to define what agents can do. Agents can only draft an application and communicate with the PTO. Absolutely everything else has to be done by attorneys.

It's been almost 50 years since the Supreme Court said you're wrong.  Agents can also offer patentability opinions to their clients, of their clients' inventions and possibly also of others' inventions if reexamination is being sought.

"...a practitioner authorized to prepare patent applications must, of course, render opinions as to the patentability of the inventions brought to him, and that it is entirely reasonable for a practitioner to hold himself out as qualified to perform his specialized work, so long as he does not misrepresent the scope of his license."

Sperry v. Florida, 373 U. S. 379.

The gamut of what sorts of tasks are proper for a patent agent to perform without "misrepresenting the scope of his license" is a little more varied than you are coloring it when you use language like "absolutely everything else".  Certainly, patent agents are licensed to conduct searches of the prior art and prepare reports when such a function is inherent to proper preparation of a patent application.

[dablueman]

It's been almost 50 years since the Supreme Court said you're wrong...Agents can also offer patentability opinions to their clients, of their clients' inventions and possibly also of others' inventions if reexamination is being sought.

Sorry, it's been a long day and a while since I last read Sperry (professional responsibility course in law school). Please point out how exactly I was wrong. I assumed talking with your client about the patentability of an application to be part of the drafting process, along with communicating with the PTO. How else would you draft an application? Reexamination falls under the purview of "communicate with the PTO".

Certainly, patent agents are licensed to conduct searches of the prior art and prepare reports when such a function is inherent to proper preparation of a patent application.

I guess I had to enumerate what I (and apparently you) considered inherent parts of the drafting process.


I guess I should list things agents cannot do:
1) give advice on the potential infringement of a patent;
2) draft any kind of contract (including filling in contracts for clients);
3) represent a client in court*;
4) be a partner in any firm in a state that follows the model rules of professional conduct (most states I know);

*Anticipating Robert KS's objection, I don't consider the board to be a court.

Sorry if I "colored" the scope of what an agent can do. I also don't think that the scope of what an agent can do is really that expansive. It's still pretty much limited to things required for the drafting of the application and drafting correspondences for the client to the PTO. My wife is a CPA and the scope of what a patent agent can do is pretty much on par with what a CPA can do when representing a client before the IRS.

[Robert K S]

I don't consider the board to be a court.

You defined the agent's qualified practice "absolutely" in terms of drafting and correspondence.  I think these are the smallest parts of an agent's actual work, the larger part being counseling the client and giving legal advice.  Yes, a patent agent is allowed to give legal advice, though the scope of this advice may be limited to advice relating to securing patent protection.

Though it hasn't been mentioned yet, a patent agent is also not qualified to prosecute trademark applications.

[DogDayPM 9er9er9er]

I don't consider the board to be a court.

C'mon, "kangaroo", surely!   

[dablueman]

I don't consider the board to be a court.

C'mon, "kangaroo", surely!   

Nope, though if I ever get overturned then things may change 
I just see the board as PTO employees that can overturn an examiner (and often by extension SPEs).

You defined the agent's qualified practice "absolutely" in terms of drafting and correspondence.  I think these are the smallest parts of an agent's actual work, the larger part being counseling the client and giving legal advice.  Yes, a patent agent is allowed to give legal advice, though the scope of this advice may be limited to advice relating to securing patent protection.

I obviously somehow struck a nerve, so I'm sorry. Yes, again I agree, an agent is allowed to give a client advice on procuring a patent.

[horsechute]

"I just see the board as PTO employees that can overturn an examiner (and often by extension SPEs)."

Where is the board overturning an examiner when it is deciding an interference contest?

Also, with regard to Klaviernista's statement that agents cannot "Draft assignments, non-disclosure agreements, licenses, or other IP related agreements",

an agent might be able to draft a contract relating to a patent, such as an assignment or a license, providing that the state in which he/she resides does not consider drafting contracts as practicing law.

[klaviernista]

Does said attorney have to be registered with the USPTO to appeal a case to the CAFC, or is that irrelevant once the case is done in the BPAI?

I think it's irrelevant, but the attorney will need to be admitted to practice before the CAFC (just involves filling out a form as far as I can tell).

Form + certificate of good standing, if I recall correctly.

And no, the attorney doesn't have to be registered before the PTO.

[bleedingpen]

an agent might be able to draft a contract relating to a patent, such as an assignment or a license, providing that the state in which he/she resides does not consider drafting contracts as practicing law.

Are there states where drafting a K would not be considered practicing law?